The latest practice of EUIPO and countries which harmonized their practice in the field of trademarks establishes a new concept and rules laid down in three important aspects of trademark registration:
- PRIORITY – a trademark in black and white from which priority is claimed is not identical to the same mark in color unless the differences in color are insignificant; the same rule applies to a trademark in greyscale;
- RELATIVE GROUNDS for refusal of registration – an earlier trademark in black and white or in greyscale is not identical to the same mark in color unless the differences in color are insignificant;
- GENUINE USE – a simple change only in the color of the trademark registered in black and white or greyscale does not alter the distinctive character of that trademark for the purpose of establishing genuine use, as long as the following requirements are met:
- the word/figurative elements coincide and are the main distinctive elements;
- the contrast of shades is respected;
- color or combination of colors does not possess distinctive character in itself and;
- color is not one of the main contributors to the overall distinctiveness of the mark.
In a recent trademark opposition case I took before the IPO in the UK, the Tribunal referred to the suppressed case law, and I quote: “I bear in mind that registration of a mark in black and white covers use in any color; however, it is not appropriate to notionally apply complex color arrangements, which appears in the applicant’s mark.”
Even though I won the case, it surprised me that this old but gold rule still lives in practice.
Written by Ljubomir Kljajic, Serbia’s patent attorney and EPO legal practitioner, IP expert in trademarks, trade secrets and copyrights, IPSYSTEMS Novi Sad, the Republic of Serbia.